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Wednesday, October 10, 2012

IPAB: Decision in Review Petition not Appealable under Section 117A of Patents Act

In a short order dated October 8, 2012,
the Intellectual Property Appellate Board (IPAB) has ruled that an order passed
by the Controller of Patents in a review petition under Section 77(1)(f) of the
Patents Act is not appealable before the IPAB.

The conclusion was arrived at on
literal interpretation of Section 117A of the Act since under the said
provision only decisions, orders or directions of the Controller issued under
the provisions expressly mentioned in Section 117A(2) are appealable before the
IPAB.

Support was drawn from Order 47,
Rule 1 of the Code of Civil Procedure under which there is no appeal from an
order passed in a review petition.

Some might argue that an order
passed in a review petition is still an order passed under the original
provision which governs the proceeding. Simply put, a review of a decision
under Section 15 could still be treated an order under Section 15. Therefore, another appeal from the order in the review petition must lie. The counter
to this is that, if an appeal against the original decision is already provided
for under the Act, there is no reason to provide for an additional appeal
against the review order as well.

4 comments:

I was considering cases where a review petition at the Patent Office under S. 77 (1) f and an appeal at the IPAB under S. 15 are pending simultaneously?After receiving refusals to grants, a lot of Applicants have taken both these options simultaneously. Do you think this decision provides some relief? I think it would now be better for Applicants to chose only IPAB, since it is very unlikely that the Controller may change his mind of refusing the grant. If he sustains his decision, the Applicants are left with very little choice.What is your opinion?

Thanks for the comment Disha and the practical questions you raise. I think this decision only reinforces the strict (and correct) interpretation of Section 117A. It does not help applicants decide whether they must choose between a review and an appeal or explore both simultaneously. As for your query, review petitions typically yield results before a judicially trained mind. In other words, one could expect review petitions to throw up different results before Court. But before the Patent Office, I don't think it is an effective option (although I dont have empirical evidence with me). This is because examiners and controllers (probably owing to lack of training as lawyers/members of the judiciary) tend to not change their opinions. In fact, they might even pass harsher orders in review petitions (I dont deny this could change from controller to controller). Therefore, it is probably best to prefer an appeal before the IPAB instead of giving the Controller another opportunity to run down the application.

I agree with you both. In my experience, there are hardly any instances where the Controller reversed his decision under Sec 77(1)(f). However, prior to the IPAB getting functional for Patents, a review petition was by far the only option left to explore, unless of course, the Applicant wished to approach the Court. Hence, it became a norm to file such review petitions. Now, with the IPAB being active, this route has almost become obsolete in my opinion. An appeal would be a much effective way to agitate any adverse order of the Patent Office falling within Section 117A.